OPPOSITION No B 2 506 213

OPPOSITION DIVISION

OPPOSITION No B 2 506 213

Intuitive Surgical, Inc. 1266 Kifer Road, Bldg 101, Sunnyvale, California 94086, United States of America (opponent), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)

a g a i n s t

DaVinci HealthCare Ltd, DaVinci Hospital, Kan K Pirotta Street, Birkirkara 1111, Malta (applicant).

On 19/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 506 213 is partially upheld, namely for the following contested services:

Class 44: Healthcare; Health counselling; Health counseling; Health centres; Health centers; Health screening; Health care; Health-care; Healthcare services; Health spa services; Health hydro services; Health assessment surveys; Mental health services; Health clinic services; Providing health information; Health-care services; Human healthcare services; Health care relating to homeopathy; Health care relating to hydrotherapy; Personality testing [mental health services]; Consultancy relating to health care; Health care relating to fasting; Health care consultancy services [medical]; Advisory services relating to health; Health care relating to chiropraxis; Health advice and information services; Professional consultancy relating to health; Health care relating to osteopathy; Health care relating to naturopathy; Provision of health care services; Professional consultancy relating to health care; Consulting services relating to health care; Information services relating to health care; Providing health care information by telephone; Health care relating to relaxation therapy; Health care relating to remedial exercise; Health care relating to therapeutic massage; Personality assessment services [mental health services]; Technical consultancy services relating to medical health; Exercise facilities for health rehabilitation purposes (Provision of -); Provision of health care services in domestic homes; Preparation of reports relating to health care matters; Advice relating to the personal welfare of elderly people [health]; Health clinic services [medical]; Health resort services [medical]; Home health care services; Health risk assessment surveys; Managed health care services; Health farm services [medical]; Medical health assessment services; Health care in the nature of health maintenance organizations; Health care relating to acupuncture.

2. European Union trade mark application No 13 618 202 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 618 202. The opposition is based on, inter alia, Union trade mark registrations No 1 281 450 and No 12 926 002. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Union trade mark registrations No 1 281 450 and No 12 926 002.

The goods and services

The goods and services on which the opposition is based are the following:

EUTM 1 281 450 DA VINCI

Class 9: Software and instructional manuals in electronic format sold as a unit therewith.

Class 10: Computerized surgical manipulation system comprised of surgeon's console, master control, immersive video display, camera image processing equipment, surgical manipulation system, patient-side cart with set-up arms and manipulator slave arms, sterile adaptors to connect arms to instruments, and a full line of reposable (limited re-use) tools namely, laparoscopes, endoscopes, trocars, cannulas, cutters, clamps, elevators, gouges, knives, scope preheaters, light sources, cables and component parts, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, lens cleaning, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers/needle holders, clamps/hemostats/graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction/irrigation probes, sterile drapes, hemostats, amputation hooks, osteotomes, saws, retainers, suturing apparatus, measuring tapes, chisels and contractors, files, skin graft expanders, lancets, mallets, pliers, hammers, rasps, spatulas and strippers; surgical instruments, namely, scalpels, scalpel blades and handles, staplers, tackers, clip appliers, electrocautery tools, forceps, needle holders, guides and drivers, graspers, kiteners.

Class 41: Educational services in the field of surgery, namely, seminars, classes, conferences, reference site training, and workshops to train physicians to perform surgical procedures.

Class 42: Medical services, namely, surgical procedures.

EUTM 12 926 002 - DA VINCI Si

Class 10: Computerized surgical manipulation system comprised of surgeon's console, master control, immersive video display, camera image processing equipment, surgical manipulation system software and instructional manuals provided as a unit, patient-side cart with set-up arms and manipulator slave arms, sterile adaptors to connect arms to instruments, and a full line of resposable tools, namely, laparoscopes, endoscopes, trocars, cannulas, cutters, clamps, elevators, gouges, knives, scope preheaters, light sources, cables and component parts, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, lens cleaning, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, sterile drapes, hemostats, amputation hooks, osteotomes, saws, retainers, suturing apparatus, measuring tapes, chisels and contractors, files, skin graft expanders, lancets, mallets, pliers, hammers, rasps, spatulas, and strippers; surgical instruments, namely, scalpels, scalpel blades and handles, staplers, tackers, clip appliers, electrocautery tools, forceps, needle holders, guides and drivers, graspers and kiteners; medical and surgical apparatus and instruments and parts and fittings for all the aforesaid goods.

Class 41: Educational services in the field of surgery, namely, seminars, conferences, classes, reference site training and workshops to train physicians to perform surgical procedures.

Class 44: Surgical assistance services in the nature of surgical advice provided to medical and surgical professionals in the operating room from remote locations via the Internet and global computer networks through archived medical images and a data storage and retrieval system.

The contested services are the following:

Class 41: Health education; Health club services [health and fitness training]; Education services relating to health; Instruction courses relating to health; Health and fitness club services; Providing health club and gymnasium services; Provision of educational services relating to health; Provision of health club [physical exercise] facilities; Provision of educational health and fitness information; Training services relating to health and safety; Vocational education relating to avoidance of health related problems; Providing of training in the field of health care and nutrition; Health club [fitness] services; Health club services [exercise].

As a preliminary remark, it has to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification. Having said this, it has to be pointed out that the services Medical services, namely, surgical procedures of earlier mark No 1 are incorrectly classified in Class 42 and should have been classified in Class 44 instead.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term namely, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 41

The earlier services in Class 41 are very specialised educational services provided by universities or doctors and given to doctors or students who work or will work in the field of surgical operations. The contested services in Class 41 are health education and fitness training and information. The education of health however refers to something completely different than the earlier education about surgical procedures, it is designed to help individuals and communities to improve their health, by increasing their knowledge or influencing their attitudes with regard to health issues or by informing them about fitness courses/diets to improve the physical condition of the body. These services, besides sharing the same nature (teaching), are too far apart to be considered similar. They do not share the same purpose, the distribution channels, the providers, the method of use and they are also not in competition with or complementary to each other. These contested services also share not sufficient links with the other goods and services in Classes 9, 10, 42 or 44 as these services are even further apart. Thus, they are considered to be dissimilar.

Contested services in Class 44

The contested services Healthcare; Health centres; Health centers; Health care; Health-care; Healthcare services; Health clinic services; Health-care services; Advisory services relating to health; Human healthcare services; Consultancy relating to health care; Health care consultancy services [medical]; Health advice and information services; Professional consultancy relating to health; Provision of health care services; Professional consultancy relating to health care; Consulting services relating to health care; Information services relating to health care; Providing health care information by telephone; Health clinic services [medical]; Medical health assessment services either include the earlier services of Class 44 Surgical assistance services in the nature of surgical advice provided to medical and surgical professionals in the operating room from remote locations via the Internet and global computer networks through archived medical images and a data storage and retrieval system or overlap with them as healthcare services may also include surgical advice. They are considered to be identical.

The services Health counselling; Health counseling; Health screening; Health assessment surveys; Providing health information; Mental health services; Health care relating to homeopathy; Personality testing [mental health services]; Health care relating to fasting; Health care relating to chiropraxis; Health care relating to osteopathy; Health care relating to naturopathy; Health care relating to relaxation therapy; Health care relating to remedial exercise; Health care relating to therapeutic massage; Personality assessment services [mental health services]; Technical consultancy services relating to medical health; Exercise facilities for health rehabilitation purposes (Provision of -); Provision of health care services in domestic homes; Preparation of reports relating to health care matters; Advice relating to the personal welfare of elderly people [health]; Health resort services [medical]; Home health care services; Health risk assessment surveys; Managed health care services; Health farm services [medical]; Health care in the nature of health maintenance organizations; Health care relating to acupuncture; Health hydro services; Health spa services; Health care relating to hydrotherapy are services offered by health centres, hospitals and doctors in relation to specific health issues for which advice of a trained doctor is needed. These services are closely related to the earlier services Surgical assistance services in the nature of surgical advice provided to medical and surgical professionals in the operating room from remote locations via the Internet and global computer networks through archived medical images and a data storage and retrieval system as they can be offered by the same centres, can be directed at the same consumers and they can also be complementary to each other (for example Health screening versus Surgical assistance services). These services are considered to be similar.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

The signs

DA VINCI
DA VINCI Si

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier marks are word marks.

The contested sign is a figurative mark containing the verbal elements ‘DA VINCI’ in big turquoise capital letters and below the further verbal element ‘HEALTH’. To the left of the verbal elements there is a turquoise circle and inside the circle a Cross with turquoise lines.

The earlier marks have no elements that could be considered clearly more distinctive than other elements.

The element ‘HEALTH’ of the contested sign will be associated with ‘Soundness of body’ (www.oed.com). Bearing in mind that the relevant services in Class 44 are health-related, this element is non-distinctive for all contested services.

The turquoise cross of the contested sign will be associated with the sign for pharmacies. Bearing in mind that the relevant services are health-related, this element is non-distinctive for all contested services.

Neither the earlier marks nor the contested sign have elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘Da Vinci’. However, they differ in the additional verbal element ‘Si’ in earlier mark No 2 and in the colour of the elements and the non-distinctive elements ‘Health’ and the representation of a pharmacy cross in the contested sign, which therefore play a minor role in the visual comparison.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‛DA‑VIN-CHI’, present identically in the signs. The pronunciation differs in the verbal element ‘Si’ of earlier mark No 2 and the verbal element ‛HEALTH’ of the contested mark, which has no counterpart in the earlier signs. This verbal element is however lacking distinctiveness and the relevant public will not pay attention to this.

Therefore, the signs are aurally highly similar as they only differentiate in a non-distinctive element as well as in the additional verbal element ‘Si’ in the second earlier mark.

Conceptually, although the contested sign as well as the earlier mark No 2 as a whole do not have any meaning for the public in the relevant territory, the public in the relevant territory will understand the common element “DA VINCI” in the signs as a reference to the Italian polymath of the same name. The earlier mark No 1 will be conceptually understood as referring to this famous Italian scientist/artist. The importance of the further verbal element “Health” being non-distinctive for the relevant services will remain very limited. The circle and the representation of a green cross which will be seen as a reference to pharmacies and thus will also not play a decisive role in the comparison of the signs. As the verbal element “Da Vinci” contained in all signs will be understood as the famous Italian polymath, the signs have the same concept with regard to this element.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier Union trade mark No 1 281 450 enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

Global assessment, other arguments and conclusion

The services are partly identical, partly similar and partly dissimilar.

The signs are aurally, visually and conceptually similar to the extent that they include the word ‘Da Vinci’, which is the only verbal element in earlier mark No 1 and the first verbal element in earlier mark No 2, and is fully included in the contested mark being the most distinctive verbal element.

When a sign, such as the contested mark, consists of both word and figurative components, the word components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public will more readily refer to a sign by its verbal component than by describing the elements of stylisation.

The aforementioned principle is fully applicable in the present case, since the relevant public will clearly read and pronounce the word ‘Da Vinci’ in the contested mark. It should be added that the stylisation of the contested mark is not sufficiently striking to obscure or camouflage the word element, to which the relevant consumer will readily refer to name the mark.

The overall impression that the signs will make on the relevant public will be similar. The differences between the marks are considered insufficient to counteract such an impression.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Union trade mark registrations. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 12 926 011 for the word mark - DA VINCI Xi
European Union trade mark registration No 13 380 911 for the word mark - DA VINCI SP

Since these marks cover the same or a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 22/04/2015 the opponent was given a time limit until 04/09/2015, commencing after the end of the cooling-off period, to submit the abovementioned material. This deadline was later extended by the request of the opponent until 04/11/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sigrid DICKMANNS

Lars HELBERT

Judit NÉMETH

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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